The Vietnamese National Assembly ratified Resolution No. 102/2020/QH14 on the approval of the EVFTA (the Resolution).
The approval of the EVFTA is long anticipated to enhance the Vietnam - EU bilateral trade relationship as well as to promote the progress of Vietnam’s international economic integration. The EVFTA entered into force from 1st August 2020. According to the Resolution, certain provisions of the EVFTA will be applied directly without any localisation step in national laws from 1 August 2020. In addition, while waiting for the new amended IP Law is issued in 2021, the Resolution provides guidance on the application of other provisions in the interim.
1. Direct application of EVFTA
The text of the EVFTA will be directly applied for GIs with details below:
Geographical Indications (GIs):
Under the EVFTA, 169 European GIs and 39 Vietnamese GIs for wines, spirits, agricultural products and foodstuffs in the Annex 12-A are subject to direct protection without having to go through the registration process. More importantly, the European GIs enjoys similar treatment GIs for wines and spirits prescribed in the Vietnam IP Law which is the broadest scope of protection for GIs. Therefore, these GIs are protected even where the true origin of the product is indicated or the geographical indication is used in translation or accompanied by expressions such as such as "kind", "type", "style", "imitation" or the like.
In addition, some exceptions of the GI protection will be applied from 1 August 2020. In particular, the EVFTA allows the use of GIs including "Asiago", "Fontina", "Gorgonzola", “Feta” by third party as long as there has been actual commercial use in Vietnam prior to 1 January 2017. Similarly, those that made actual commercial use in good faith of the GI “Champagne”, or its translation, transliteration, or transcription may keep using this indication until 1 August 2030.
In addition, under the EVFTA, the legitimate use of the protected GIs shall not be subject to any registration of users, or further charges.
2. Specific guidance on the application of remaining EVFTA’s IP provisions until the issuance of the new amended IP Law
The Resolution sets out specific guidance on the application of the below IP matters until Vietnam adopts amendment of IP Law in 2021
The EVFTA proposes two options for compensating a patent owner for the reduction of the exploited period of an effective patent life, resulting from unreasonable delays in the granting of the first marketing authorisation procedures with regard to pharmaceuticals produced under that patent. The two options proposed by the EVFTA are in the forms of patent term extension. However, the Resolution is silent on the patent term extension
Instead, the Resolution provides another mechanism to compensate the patent owner for such delay. Specifically, the compensation is made by waiving of fee for use of patent for the delay caused by the competent authority responsible for grant marketing authorisation (the Drug Administration of Vietnam - DAV).
The marketing authorisation procedure of pharmaceuticals is considered delayed if the DAV does not give the first response to the applicant without justifiable reasons after 24 months following the date of filing of the application for marketing authorisation. The delay period is counted right after 24 months following the date of filing of the application for marketing authorisation and ends on the date when the DAV gives the first response.
To claim the benefit from such compensation, within 12 months following the granting of a market authorisation, the patent owner must submit a document certified by the DAV, confirming such delay in the marketing authorisation procedure, to the Intellectual Property Office of Vietnam.
If the patent owner already pays a given fee for use of patent during the delay period, the paid fee shall be deducted from the fee of subsequent annual payment or refunded.
The Resolution provides a new definition of “industrial design” which is the appearance of the whole product or a component part which is incorporated into the whole product. The appearance is represented by as shapes, lines, colours or combination thereof and visible during the use of the product.
In this new definition, there are two new requirements to be added to the current IP Law:
- Industrial design refers to a component part which is incorporated into the whole product; and
- industrial design must be visible during the use of the product.
However, the wording of this supplemented definition doesn’t seems to substantially change the current definition of industrial designs in Vietnam because (i) a component part which is incorporated into the whole product was also covered under the definition of “product” under the current regulations, and (ii) industrial design that is invisible during the use of the product was already excluded from design protection in Vietnam.
Under Vietnam’s industrial design regulations, an industrial design must be visible during the use of a product, which is exploited under the conventional way, and carried out by any user, excluding maintenance, servicing or repair work. The Guidelines for Examination of Industrial Design Applications clarify that “use of the product means to manufacture, circulate, exchange, sell, install the product by any direct user including manufacturers, salesman, distributors.
However, under the EVFTA, the term "normal use" is used instead. It means use by the end user, excluding maintenance, servicing or repair work. For example, an electrical connector in EUIPO, a component part normally incorporated in a casing (limited by view of an end user), are not patentable, whereas it seems to be protected in Vietnam according to the current wording of the Resolution and current regulations because such industrial design bearing or embodying product can be exploited independently during manufacturing, circulation, exchange or sale. Therefore, we expect that the wording of the product definition relating to industrial design will be revised to be consistent with the wording of the EVFTA.
The EVFTA sets out a new ground for revocation of trade mark protection compared to the current IP Law. In particular, the misleading use of a registered trade mark, particularly as to the nature, quality or geographical origin of those goods or services by the proprietor of the trademark or another person with his consent will be considered as a valid ground for revocation of trade mark registrations.
In the current IP Law, the use of a misleading trade mark in Vietnam can only be stopped by means of cancellation of validity in accordance with Article 96 of the IP Law. In particular, a mark will be rejected if it “misleads the public about the nature, quality or geographical origin of those goods or services” One must prove that the subject trade mark had failed to satisfy such protection criteria at the time the trade mark was granted to invalidate the registration.. This provision has actually narrowed down available grounds for stopping the use of misleading trade mark after the mark’s registration.
The EVFTA has filled in this gap by allowing the revocation action against the registered trade mark even if the mark is misleadingly used after its registration/protection. This provision is an expected improvement for IP law in Vietnam since it allows necessary measures to be taken against the misleading use to protect the consumers’ rights as well as preventing the trade mark owner from using his/her mark improperly. However, IP Vietnam needs to clarify what types of evidence of misleading use to be submitted to support the revocation on this basis.
3. Effectiveness to the United Kingdom
The EVFTA is applicable for the United Kingdom from the date of entry into force of this Agreement until December 31, 2020 inclusive (an extension for 24 months is allowed under an agreement between the United Kingdom and European Union concerning UK’s withdrawal from the EU).